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Identifying and Incorporating Intellectual Property into your Business

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Burgess Law May.30.2017

Intellectual property (“IP”) is often misunderstood.  IP is not the exclusive preserve of Fortune 500 companies, deep thinkers or those who sip on energy drinks while they work on computers in their parent’s basement.  Virtually every small and medium-sized business has some form of IP and should be taking steps to ensure it is protecting and maximizing its benefit of its IP.

So what is IP?

“Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.  IP is protected in law by, for example, patents, copyright and trademarks, which enable people to earn recognition or financial benefit from what they invent or create.”

World Intellectual Property Office (WIPO), http://www.wipo.int/about-ip/en/

I like this definition of IP because of the turn of phrase “creations of the mind”.  Ultimately all IP starts as an idea.  There are no rules for its creation.  And whether that idea turns into an invention, a work or design, whether it is performed, broadcast or communicated, or whether it is kept secret, is for the most part up to the creator.

It’s that innovation – that spark of creation – that is the basis of IP that can subsequently be extremely valuable to businesses.

But enough with that flight of fancy, more specifically intellectual property can be categorized as follows:

1. Patents.  Governed by the Patent Act (Canada), patents exist solely as a result of statute.  Patents offer a 20 year monopoly on the commercial use of inventions.  And patentable invention is a new and useful process, machine, manufacture or composition of matter, or any improvement of any process, machine, manufacture or composition of matter.

2. Copyright.  Governed by the Copyright Act (Canada) and separately at common law, copyrights protect original works, performances, broadcasts and communication signals.  Works can include artistic, dramatic, literary or musical works.

3. Trade-marks.  Governed by the Trade-marks Act (Canada) and separately at common law, trade-marks protect the marks that persons use to distinguish their goods and/or services from others in the marketplace.  Marks can be a word, sound, symbol, drawing, shape, packaging or colour(s), or any combination thereof.

4. Industrial Designs.  Governed by the Industrial Design Act (Canada), registered industrial designs offer their owners the exclusive use of that design for 10 years.  Designs must be visual and can shape, configuration, pattern or ornament.

5. Integrated Circuit Topography.  Governed by the Integrated Circuit Topology Act(Canada) protect 3D configurations of electronic circuits.

6. Confidential Information | Trade Secrets.  Confidential information and trade secrets are not governed by statute, but exist by the nature of their confidentiality | secrecy.  In other words, as long their owners keep information confidential | secret, they remain confidential information | trade secrets.  Owners of confidential information | trade secrets are protected at common law but most will also take steps to ensure they have legal agreements in place, as well as internal procedures and security measures, to retain the confidentiality | secrecy of their information.

The foregoing list was intended as a very brief overview of the categories of IP.  In future blog posts we will discuss each area in greater detail.

SO WHAT NEXT?

Each business should consider conducting an IP audit.

What does this involve?

The World Intellectual Property Organization defines IP audit as follows:

“An IP Audit is defined as a systematic review of the IP assets owned, used or acquired by a business. Its purpose is to uncover under-utilized IP assets, to identify any threats to a company’s bottom line, and to enable business planners to devise informed strategies that will maintain and improve the company’s market position.”

(WIPO, http://www.wipo.int/sme/en/documents/ip_audit_fulltext.html)

Small and medium-sized businesses should be doing IP audits periodically in order to ensure that they make sound business decisions based on full knowledge of the extent of its property that they have, use and may have or use in the future.

To get you thinking, some basic questions to consider include:

What IP do you have now?

What IP do you use now?

What IP do you want to have or use?

What IP do you anticipate having or obtaining | using in the future?

How does this IP fit into your business plan?

Who has rights to the IP you identified?

What are those rights?

What are the sources of those rights? (Example: are they the rights of an inventor / author, were the rights assigned or obtained by agreement or is there an express or implied license to use the IP?)

What is the value of the IP?  (What is the replacement value of the IP?)

What market influences impact the IP?

Can rights to the IP be assigned or licensed?

How is the IP currently protected?  (Is it subject to registration under any of the IP statutes, are they protected by a confidentiality | non-disclosure agreement or employment agreement or another agreement with a third party, or are they protected by internal company procedures and | or security measures?)

After you audit your IP, whether informally on your own or with the help of a professional, you should incorporate IP into your business plan.

Given the different layers of IP that can exist simultaneously, it is important for your business to consider which IP aligns and is important to your business plan, including what resources and measures you will dedicate to protecting your IP, what are the opportunities for your business in relation to the IP and what steps will be taken to commercialize or fully benefit from your IP.

HELP NEEDED

Turning your mind to what IP your business may have can seem daunting, but it does not have to be difficult.

Seek an Agent

If your IP issue is strictly trade-mark related, you can speak to a registered trade-mark agent.  (Yes, there sometimes is a difference, trade-mark agents do not have to be lawyers.)  You can search registered trade-marks agents at cipo.gc.ca or more specifically at http://www.ic.gc.ca/cipo/mc-tm/agents.nsf/tmagents-eng?readform.

If your IP issue is strictly patent related, you can speak to a registered patent agent.  (They also do not need to be a lawyer.)  You can search registered patent agents at cipo.gc.ca ore more specifically at http://www.ic.gc.ca/cipo/pa-br/agents.nsf/pagents-eng?readform.

Talk to your Lawyer

Otherwise, to get started you can talk to your lawyer.  You should have an open line of communication with your lawyer which allows you to bounce questions of him or her, and if he or she cannot help they should be able to refer you on to the right person who can help with your issue.

A lot of people are reluctant to contact their lawyer – even when they like their lawyer and are happy with their services – because they are either not entirely comfortable asking questions or they are concerned about legal fees.

Law is a service, like any other, so clients should demand good service and expect more from your legal counsel.  Your ideal corporate counsel will have a sound understanding of your business and should be able to get your started on reviewing your IP needs without even opening a file.

This blog was provided by Burgess Law

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